Never too much to learn about trademarks, branding, and the law.

The Zone of Natural Expansion: Stealth Goods and Services

This post is part of a series for non-U.S. lawyers who may need to deal with U.S. trademarks via the Madrid Protocol system, and hopefully will be useful in explaining a trademark concept related to goods and services which is particular to the U.S. system (but do let me know if your jurisdiction has something similar, I’d enjoy learning about it!): the zone of natural expansion.

Trademark rights grant a senior user the right to preclude registration of the mark (or similar mark) on goods and services which are identical or similar to those which are claimed in the trademark registration. The doctrine of natural expansion goes one step further: it allows a senior user to oppose a junior user’s application for the same or similar mark for goods and services which the senior user might reasonably expect to offer under the normal expansion of the senior user’s business under its mark. Specifically, this means that a senior holder of a trademark may have rights in goods and services which are not even claimed in the registration.

The doctrine applies regardless of whether the senior user has actually expanded its business, and regardless of the senior user’s attention. Key to the analysis is the perception of the average consumer: would a consumer believe that the junior user’s goods and services emanate from the senior user? If yes, the senior user will likely be successful in opposing the junior user’s application.

Demonstrating that the junior user’s goods and services lie within the zone of natural expansion is in many ways similar to the analysis of the relatedness of goods and services, which is the policy of USPTO examiners in ex parte cases. Examiners will look at, inter alia:

if the junior user’s area of business is a distinct departure from the senior user’s business, that is, requiring a new technology or know-how

nature and intended purpose of the goods and services

the channels of trade

whether the classes of customers are the same

whether the goodwill of the senior user will carry over into the second area

whether other companies have expanded from offering the senior user’s goods and services into the junior user’s goods and services

Acceptable evidence in a zone of natural expansion analysis may be:

news articles and/or internet evidence showing that the relevant goods and services are used together or by the same consumers

marketing material showing the relevant goods and services being advertised together or sold by the same manufacturer or dealer

third-party registrations which cover both the senior and junior users’ goods

Instances where a senior user was able to establish that a junior user had imposed on the former’s zone of natural expansion:

Does your jurisdiction recognize a legal theory similar to this? I’d enjoy hearing about it via Twitter (@Tasteelaw) or email (ck@cliffkuehn.com).